183
CHI.-KENT J. INT¶L & COMP. L.
Vol. XII
Cases & Controversies
Court: WIPO Arbitration and Mediation Center
C ase: Google Inc. v. Ea monn Smyth
Date: August 11, 2011
W ritten by: Kyom Bae
Complainant*RRJOH,QF³*RRJOH´of California, filed the claim for a
transfer of the domain name <googlehire.com> registered by Respondent, a
resident of Swindon, United Kingdom, pursuant to the Uniform Domain Name
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Background Information
Complainant operates the internet search engine at its domain name
<google.com>, which was registered on September 15, 1997. Complainant¶s
website is one of the most popular destinations on the internet, receiving
approximately 581 million worldwide visitors per month. It generated advertising
revenues of $28,236 million in 2010. Complainant owns numerous trademark
registrations of the GOOGLE mark in many countries, including the United
Kingdom.
Respondent registered the disputed domain name on January 21, 2010.
The domain name currently resolves to a website that does not have any
substantive content except a number of sponsored listings and links to other
websites.
Complaints
First, Complainant argues that the domain name <googlehire.com> is
nearly identical or confusingly similar to Complainant¶V WUDGHPDUN DV WKH
incorporation of DVXIIL[³KLUH´GRHVQRWHOLPLQDWHWKHFRQIXVLQJO\VLPLODUDVSHFW
of the domain name. Complainant alleges that Respondent used its trademark to
attract internet users for commercial benefit. Additionally, the domain name
incorrectly suggests that Respondent is associated with Complainant.
Second, Complainant claims that Respondent has no rights or legitimate
interests in the domain name. Complainant has not granted any license or
authorization to Respondent to use its trademarks in any manner. According to
Complainant, Respondent registered the domain name to resell it, not to carry out
any business. Therefore, the registration of the domain name is for neither a bona
fide offering of goods or services, nor a legitimate non-commercial or fair use.
Complainant alleges that there is no legitimate reason for Respondent to have
registered the domain name other than to use the fame of the GOOGLE mark to
generate web-traffic and to confuse internet users. 7KH WHUP ³JRRJOHKLUH´ LV
neither a natural word nor common name; furthermore, Respondent has never
been known by the GOOGLE mark or by any similar name.
No. 1
Cases & Controversies
184
Last, Complainant claims that Respondent registered and used the domain
name in bad faith. It contends that Respondent was aware of the well-known
GOOGLE mark at the time of registration of the domain name. Nevertheless,
Respondent registered the name intentionally to attract the visitors for commercial
gain. Complainant argues that Respondent misled the visitors and created a
likelihood of confusion with Complainant¶V WUDGHPDUN DV WR WKH VRXUFH
sponsorship, affiliation, or endorsement of the website.
Furthermore, because the 5HVSRQGHQW¶V ZHEVLWH GRHV QRW FDUU\ RXW DQ\
business, the sole purpose of registration was to prevent Complainant from
registering it and to derive profits by offering the domain name for sale.
Responses
Respondent did not reply to Complainant¶VFODLPV
Discussion and F indings
Complainant has the burden of proving the following three elements under
the UDRP in order to be entitled to transfer the disputed domain name: (1) the
disputed domain name is identical or confusingly similar to a trademark or service
mark in which Complainant has rights; (2) Respondent has no rights or legitimate
interests in respect of the disputed domain name; and (3) the disputed domain
name has been registered and is being used in bad faith.
Respondent is required to submit a Response to the Complaint within
twenty days of the date of commencement of the administrative proceedings. If
Respondent fails to submit a response, the Panel is to decide the dispute based
upon the Complaint, and, absent any exceptional circumstances, is entitled to
draw adverse LQIHUHQFHVIURP5HVSRQGHQW¶VIDLOXUH.
(1) Identical or Confusingly Similar
The Panel found that the disputed domain name is confusingly similar to
the GOOGLE mark and the <google.com> domain name. In order to satisfy the
WKUHVKROG WHVW IRU ³LGHQWLFDO RU FRQIXVLQJO\ VLPLODU´ WKH WUDGHPDUN QHHGV WR EH
recognizable within the domain name, with the addition of common, dictionary,
descriptive, or negative terms typically being considered as insufficient to prevent
internet user confusion. The Panel found that this threshold test is satisfied.
The GOOGLE mark is an invented word, in which Complainant has rights,
and has acquired widespread fame and reputation. The mark is instantly
recognizable as the dominant or principal component of the disputed domain
name. 7KHDGGLWLRQRIWKHWHUP³KLUH´LQWKHGRPDLQQDPHGRHVQRWHOLPLQDWHWKH
confusingly similar aspect of the domain name. 1HLWKHUZRXOGWKHVXIIL[³FRP´
be sufficient to avoid the similarity since it is a requirement of registration.
(2) Rights or Legitimate Interests
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CHI.-KENT J. INT¶L & COMP. L.
Vol. XII
Complainant is only required to make out a prima facie case that
Respondent lacks rights or legitimate interests. Once Complainant establishes a
prima facie case, Respondent carries the burden to prove the rights or legitimate
interest in the domain name. Absent a response, the Panel is entitled to draw
inferences against Respondent.
Respondent registered the domain name in January 2010, which is long
after Complainant began using its famous GOOGLE mark. Complainant has
never been associated or affiliated with Respondent. Nor has Complainant given
any authority or license to Respondent to use the trademark. Furthermore,
Respondent is not using the domain name for a bona fide offering of goods or
services or for making non-commercial or fair use of the domain name;
Respondent does not carry out any business activities. Thus, the use of the
trademark to derive advantages from internet user confusion is not legitimate.
(3) Registered and Used in Bad Faith
The Panel found that Respondent was clearly aware of the reputation and
fame of the GOOGLE mark when he registered the domain name. In the absence
of any response from Respondent, his choice of the domain name, which was
confusingly similar to Complainant¶V WUDGHPDUN, was to derive unfair monetary
gain and cannot have been accidental. The Panel found that such an act
constitutes bad faith registration and use.
Decision
The Panel ordered the disputed domain name <googlehire.com> be
transferred to Complainant per the UDRP.